NAPP Trademark User Agreement for NAPP Members
and Small Firms Qualifying as NAPP Firms
This Agreement, is effective as of the
day of
, 20 ,
by and between National Association of Patent Practitioners, Inc., hereinafter referred to
as “NAPP”, a non-profit corporation, organized and existing under the laws of the
Commonwealth of Virginia, located at 3801 Lake Boone Trail, Suite 190, Raleigh, North
Carolina, 27607 and
(NAPP Member name)
(NAPP Firm name)
the laws of
,a
or
organized and existing under
,
located at
and hereinafter referred to as USER.
WHEREAS, NAPP is the owner of several registered and non-registered
trademarks, service marks, certification marks, and collective marks (NAPP Marks); and
WHEREAS, USER is desirous of displaying one or more NAPP Marks in
connection with its business;
NOW, THEREFORE, in consideration of the foregoing and of the mutual
promises hereinafter set forth, the parties agree as follows:
Definitions:
“You”, “yours”, and “USER” refer to the party to whom a right to display one or
more NAPP Marks is intended to be granted under this Agreement.
“Agreement” means this NAPP Trademark User Agreement for NAPP Members and
Small Firms Qualifying as NAPP Firms.
“NAPP Member” includes current, fully paid-up patent practitioner members
(including best practices for risk reduction program (BPRR) compliant patent
practitioner members), student members, and associate members, as defined in the
NAPP Bylaws (as they may be amended from time to time). (For convenience, the
present definitions are included as Appendix III along with some explanatory
examples; however, the most recent definitions as they appear in the NAPP Bylaws
shall control.)
“NAPP Marks” includes any trademark, service mark, collective mark, and
certification mark), registered or unregistered, owned by NAPP, including the marks
and registrations referred to in Schedule A and any other mark owned by NAPP and
shown on the NAPP.org website, brochures, mailers, or other documents (including
electronic documents).
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“NAPP Firm” means a Small Firm (as defined herein) having at least 30 percent of
its Qualified Persons qualifying as NAPP Members.
“Qualified Persons” means individuals who are registered with either a state bar of a
US state or the USPTO patent bar.
“Small Firm” means a firm (including general practice or patent-focused law firms,
and patent agent service firms) having from 1 to 10 Qualified Persons.
By downloading (using the NAPP Trademark Access Procedure referred to herein) or
otherwise gaining access, or displaying, any NAPP Marks, you agree to the following
terms and conditions:
1.
GRANT
1.1
In consideration of USER agreeing to the terms and conditions of this Agreement,
NAPP grants USER a non-exclusive, paid-up, non-sublicensable, non-transferable right
to display NAPP Marks, subject to the conditions and restrictions in this Agreement, for
the following limited purposes:
a) with respect to BPRR COMPLIANT designations, to certify USER having
qualified under the quality standards established by NAPP’s BPRR program;
and
b) for all other NAPP Marks, to indicate USER’s membership in NAPP, or if
USER is a Small Firm, USER’s Qualified Persons’ memberships in NAPP.
1.2
The grant in paragraph 1.1 authorizes display of BPRR-related NAPP Marks only
if USER is an individual (not a Small Firm) and currently qualified under NAPP’s BPRR
program.
1.3
The grant in paragraph 1.1 authorizes display of “NAPP Firm” marks only if
USER is qualified as a NAPP Firm.
1.4
The grant in paragraph 1.1 authorizes display of all other NAPP Marks only by
individuals qualified under the respective membership category (e.g., only USERS who
are Associate Members may use the “Associated Member” mark). Where more than one
NAPP Mark is applicable to USER, USER may choose which NAPP Mark to use.
1.5
The grant in paragraph 1.1 authorizes an individual USER in a firm or
organization to display a NAPP Mark indicating the USER’s individual status with
NAPP, regardless of whether or not the USER’S firm or organization qualifies as a
“NAPP Firm” or displays a NAPP Mark.
1.6
The grant in paragraph 1.1 does not authorize USER to display any NAPP Mark
(a) in connection with any commercial enterprise except the practice of patent preparation
and prosecution; or (b) in any manner that would indicate or appear to indicate NAPP
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endorsement of any activity or product not expressly endorsed by NAPP in writing.
2.
MEMBERSHIP STATUS
2.1
If USER’s membership in NAPP ceases, or if USER is a Small Firm, if USER
ceases to meet the definition of a NAPP Firm, then USER must cease use of all NAPP
Marks within a reasonable time, but in no case longer than thirty (30) days.
2.2
If USER’s qualification under NAPP’s BPRR program lapses, then USER must
cease use of BPRR-related Marks within a reasonable time, but in no case longer than
thirty (30) days.
2.3
In the event an individual USER’s status changes within the NAPP membership
categories (for example, from Student Member to Member, or from Member to Associate
Member) this Agreement shall remain in effect, except that USER shall have a reasonable
time, but in no case longer than thirty (30) days from the status change, to change the
NAPP Mark that USER displays.
3.
OWNERSHIP OF NAPP MARKS
3.1
NAPP asserts all proprietary rights in and to all NAPP Marks. Any use of NAPP
Marks not in accordance with this Agreement constitutes a material breach of this
Agreement and infringement upon NAPP’s rights, actionable under the law, including
United States trademark laws, laws of trademark counterfeiting, laws of unfair
competition, mail and wire fraud laws, and import/export laws, or equivalent laws of
other countries.
3.2
USER acknowledges NAPP’s sole ownership of the NAPP Marks and agrees to
do nothing inconsistent with such ownership. USER agrees that all goodwill appurtenant
to use of the NAPP Marks by USER shall inure to the benefit of NAPP. USER agrees
that USER has no, and shall have no, right, title, or interest in the NAPP Marks or
goodwill appurtenant thereto other than the right to display the NAPP Marks in
accordance with this Agreement. USER agrees not to attack NAPP’s sole title or
ownership of registrations of NAPP Marks.
4.
USAGE STANDARDS
4.1
USER may display NAPP Marks only after agreeing, via an electronic consent, to
the conditions stated in the NAPP Trademark Access Procedure.
4.2
USER may display NAPP Marks only in the exact form shown in the files
provided with the NAPP Trademark Access Procedure, and USER may not redraw, alter,
or graphically distort a NAPP Mark, nor combine it with any other symbol or mark,
except in accordance with the NAPP Trademark Access Procedure, unless otherwise
authorized in a prior written approval by NAPP.
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4.3
USER may display NAPP Marks that are registered only with the circled “®”
registered trademark symbol; otherwise the “™” symbol must be used. If USER includes
any NAPP Mark in document format, the document must include the “®” registered
trademark symbol or the “™” symbol in at least the first appearance of the NAPP Mark.
4.4
NAPP, in its sole discretion, may amend Schedule A and the Trademark Access
Procedure, and may in its sole discretion alter the appearance of NAPP Marks.
5.
MONITORING
USER agrees to cooperate with NAPP in facilitating NAPP’s control of Mark usage and
to supply NAPP with Specimens showing USER’S display of NAPP Marks upon request.
NAPP reserves the right at its sole discretion to review USER’s proposed and actual use
of NAPP Marks from time to time and to determine if use of a NAPP Mark is in
accordance with the then-current policies of NAPP. If NAPP determines that such use is
not acceptable to NAPP, and advises USER of such determination, then USER agrees to
cease use of the NAPP Marks immediately.
6.
LIMITATIONS ON FORM OF USE
6.1
USER agrees to display NAPP Marks only in connection with the categories of
materials listed in Appendix I; if USER wishes to expand to a different category, USER
must make a new request.
6.2
To use one or more NAPP Marks, USER must submit the information requested
in Appendix I, which NAPP will keep in accordance with NAPP’s privacy policy. After
you submit this information, a confirmation copy will be emailed to you for your records.
7.
INFRINGEMENT PROCEEDINGS
USER agrees to notify NAPP promptly of any unauthorized use of the NAPP Marks by
others as it comes to USER’s attention. NAPP shall have the sole right and discretion to
bring infringement, unfair competition, and any other legal or administrative proceedings
involving the NAPP Marks.
8.
TERM
The rights to display NAPP Marks under this Agreement shall continue in force and
effect unless terminated as provided for herein. NAPP shall have the right to terminate the
rights granted in this Agreement upon thirty (30) days’ written notice to USER upon
breach of any of the provisions hereof by USER, or upon NAPP ceasing to use any
NAPP Mark as a trademark, service mark, collective mark, or certification mark of
NAPP.
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9.
INTERPRETATION OF AGREEMENT
This Agreement shall be interpreted according to the laws of the Commonwealth of
Virginia, excluding Virginia’s choice-of-law principles, and the federal laws of the
United States.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
as of the day and year first above written.
NAPP:
By:
Title:
USER:
By:
Title:
I have read the terms and conditions and agree to abide by this Agreement: (Buttons for
yes and no)
If you have printed these forms and filled them out by hand, please scan and return them
by email to the attention of “NAPP Executive Director” at [email protected]
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SCHEDULE A
1.
2. “NAPP”, Registration No. 2,425,277, registered January 30, 2001, renewed July 2,
2011
3. “NAPP”, without respect to font, font size, or color
4. The word mark “National Association of Patent Practitioners”, without respect to font,
font size, or color
5. The word marks “BPRR Compliant”, “NAPP BPRR Compliant”, “NAPP Member”,
“NAPP Associate Member”, “NAPP Student Member” without respect to font, font size,
or color
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APPENDIX I
Member Name:
Your Email:
Daytime Phone:
Date you wish to begin using a NAPP Mark:
If a NAPP Mark will be displayed on an Internet website, please indicate the Internet
address (URL): ___
If you wish to include a link to NAPP.org on an Internet website, please complete, sign,
and return the "Linking Agreement" (Appendix II).
I also plan to display a NAPP Mark on the following (check all that apply) categories of
materials:
Business card
Technical or Legal Paper
Journal or Publication (please tell us the journal or publication)
Presentation (such as at a seminar)
Newsletter or Blog
Advertisement for a product, law firm, or patent services firm
Other
If other context, please describe: ___________________
If your firm qualifies as a NAPP Firm and plans to display NAPP Marks, please check
here:
Firm name: ______________
1. Total number of state and/or federal patent bar registered individuals:
2. Number of individuals in (1) who are NAPP Members:
.
3. Please list the names of the NAPP Members listed in (2) and their NAPP status
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.
(practitioner member, associate, or student):
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APPENDIX II
Linking Agreement
This Linking Agreement is made between ________________ (“Source Site”) with its
homepage URL of ___________________ and the National Association of Patent
Practitioners, Inc. (“NAPP”) with its homepage URL of napp.org.
The parties agree as follows:
The Link
The Source Site may link to NAPP as follows:
______________________________________________(the “Link”)
The Link includes NAPP’s URL and:
(select if appropriate)
___ Hypertext link–the words: ____________________________.
___ Image link: ________________________________________.
___ Framed link: ________________________________________.
Grant
NAPP grants Source Site a non-exclusive, paid-up, non-sublicensable, non-transferable
right to display the Link at the Source Site and display publicly NAPP Marks in the Link
or images including a NAPP Mark in the Link. Source Site obtains no trademark rights
under this Linking Agreement other than the right to display NAPP Marks. Any goodwill
associated with the Source Site’s use of any NAPP Mark automatically vests in NAPP.
Notifications
Source Site shall, upon notice from NAPP, promptly remove the Link. Source Site shall
promptly notify NAPP of any change to the Link or changes to the Source Site affecting
the Link.
By: ___________________________
Date: __________________________
Title: ________________
Source Site Mailing Address: _______
By: ______________________________
Date: _____________________________
National Association of Patent Practitioners, Inc.
3801 Lake Boone Trail
Suite 190
Raleigh, NC 27607
email: _________________________
email: [email protected]
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APPENDIX III
NAPP MEMBERSHIP CATEGORIES
Practitioner
Bylaws definition: Practitioner Members shall consist of persons who are interested in
the branch of law relating to patents, whose practice in the opinion of the Board of
Directors of the Corporation conforms to the Code of Professional Responsibility of the
Corporation, and who shall be and have been members in good standing as patent agents
and/or patent attorneys with the United States Patent and Trademark Office.
Description: If you are registered to practice before the USPTO as a patent attorney or
patent agent and are in good standing, you should join as a Practitioner Member. Here are
some examples of people who should join as Practitioner Members:
• A currently practicing USPTO registered patent attorney or agent in good standing
with the USPTO.
• A retired USPTO registered patent attorney or agent in good standing with the USPTO
who is not currently representing anyone before the USPTO.
• An engineer at a large corporation who passed the patent bar and received her
registration number but who has never practiced patent law.
• A second-year law school student who passed the patent bar and received his
registration number.
Student
Bylaws definition: Student Members shall consist of persons who do not qualify as
Practitioner Members but who are (1) studying to become either patent agents or patent
attorneys with the United States Patent and Trademark Office, (2) planning to practice
before the United States Patent and Trademark Office as either patent agents or patent
attorneys, and (3) not actively working in a permanent job in any patent-related field. No
person may qualify as a Student Member for more than five years.
Description: If you are not currently registered to practice before the USPTO and are not
currently working at a permanent job in a patent-related field, but are studying to be a
patent attorney or patent agent (e.g. studying to take the patent bar), you may qualify as a
Student Member. Here are some examples of people who should join as Student
Members:
• A current law school student who has not yet taken the patent bar exam but who plans
to do so.
• A law student working at a law firm as a summer associate who has not yet taken the
patent bar exam but who plans to become a patent attorney.
• A person with a BS in Electrical Engineering who is working full time as an engineer
at a large high-tech firm, and who is taking a patent bar exam study course with
plans to become a patent agent.
• A practicing attorney who specializes in trademark law and who is self-studying to take
the patent bar exam, and who plans on adding patent prosecution to her practice.
Associate
Bylaws definition: Associate Member shall consist of persons who do not qualify as
Practitioner or Student Members but have an interest in the patent business or a related
field.
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Description: If you don’t qualify as a Practitioner Member or a Student Member, but
want to join NAPP, you should join as an Associate Member. Here are some examples of
people who should join as Associate Members:
• A practicing EPO-registered patent attorney studying to take the USPTO patent bar
exam.
• A current USPTO patent examiner who has not received a registration number.
• A registered patent practitioner who is currently suspended from practice.
• A part-time technical specialist at a boutique IP law firm who is studying for the patent
bar exam.
• A person with a BS in Chemistry who has been working part time on his law degree
and who plans on taking the patent bar exam to become a patent attorney, but who
has already been a Student Member of NAPP for 5 years.
• A VP of Engineering who wants to study for and take USPTO patent bar exam, but
who has no intent to practice before the USPTO.
• A patent litigator who is studying to take the patent bar exam.
Membership is renewable annually on the anniversary of the first date of membership
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